Before Plager, Bryson, and Gajarsa, Circuit Judges.
The opinion of the court was delivered by: Per Curiam.
NOTE: Pursuant to Fed. Cir. R. 47.6, this Disposition is not citable as precedent. It is a public record. The Disposition will appear in tables published periodically.
Nashua Corporation (Nashua) appeals from the judgment of the United States District Court for the District of New Hampshire that Nashua literally infringed claims 1 through 4 of U.S. Patent No. 4,878,603 (the '603 patent) assigned to Ricoh Company, Ltd., Ricoh Corporation, and Ricoh Electronics (collectively Ricoh) and that the '603 patent was not invalid. We affirm the district court's Conclusions as to infringement and validity of the '603 patent, and reject Nashua's arguments that it is entitled to equitable relief.
Ricoh manufactures and markets many different electronic products, including electrophotographic plain paper copiers. Ricoh also manufactures and markets toner cartridges for these copiers through its various subsidiaries. Nashua manufactures and sells toner cartridges and toner for use in Ricoh's copiers and others. Nashua has various agreements with Ricoh and other copier manufacturers allowing Nashua to sell toner cartridges under the Ricoh and other brand names. Nashua also sells generic toner cartridges with no brand name.
On January 9, 1984, Ricoh filed patent application No. 598,022 (the '022 application) for a new type of toner cartridge, which eventually led to the issuance of U.S. Patent No. 4,611,730 (the '730 patent) on September 16, 1986.
AAt the time Ricoh filed the '022 application in 1984, Ricoh and Nashua were parties to a contract which provided that Nashua would distribute Ricoh copiers and toner cartridges worldwide.
Nashua began to offer its own version of a Ricoh toner cartridge in 1985. The Nashua cartridge offered for sale in the United States during 1986-87 contained an internal spiral guide rib on the inner surface of the cartridge as well as a removable gear ring. At a business meeting between Ricoh and Nashua in 1987, Ricoh informed Nashua of the '730 patent covering various types of toner cartridges. Nashua consulted its patent attorney to determine whether its products infringed the '730 patent. Nashua's attorney advised that, while Nashua may not necessarily infringe the '730 patent for various reasons, Nashua could design around the patent claims by eliminating the removable gear ring and by eliminating the internal spiral guide rib from the Nashua cartridge. Nashua subsequently redesigned its toner cartridge in accordance with these recommendations.
In June 1987, Nashua's representatives met with Ricoh's representatives at which time Nashua explained that it was redesigning its toner cartridge by eliminating the internal spiral rib and redesigning the gear ring to avoid infringing the '730 patent. Later that month, Ricoh asked Nashua to send it a sample of the redesigned product for review. Nashua sent a prototype of the redesigned cartridge shortly thereafter. Nashua continued development of the new redesigned toner cartridge, spending approximately $71,390 in November for new manufacturing molds. Nashua discontinued sales of the spiral walled cartridge and began selling the new toner cartridges in 1988.
Meanwhile, on May 23, 1986, Ricoh filed continuation application No. 866,414 (the '414 application) as a continuation of the '022 application. On April 8, 1988, Ricoh filed continuation application No. 179,626 (the '626 application) as a continuation of the '414 application. The '626 application eventually matured into the '603 patent on November 7, 1989. The claims of the '603 patent eliminated the limitations of the internal spiral guide rib and the removable gear ring which had limited the '730 patent.
At a meeting between Nashua and Ricoh in February of 1989, before the '603 patent issued, Ricoh notified Nashua of the existence of the '626 application and offered to provide Nashua with a copy of the claims of that application. Nashua refused to review those documents. In early 1990, Nashua and Ricoh terminated their contractual relationship for reasons unrelated to this patent litigation.
In April 1994, Ricoh filed suit against Nashua alleging infringement of the '603 and '730 patents. On November 8, 1994 the U.S. Patent and Trademark Office (PTO) issued reexamination certificates confirming the patentability of claims 1-14 of the '603 patent. The '730 patent was dropped from the present litigation by stipulation of the parties. On March 31, 1997, the United States District Court for the District of New Hampshire found that Nashua's redesigned toner cartridge infringed claims 1-4 of the '603 patent. The district court further found that the '603 patent was not invalid for failure to disclose the ...